DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 30, 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 24, 2025 has been considered by the Examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show distal end portion 202 and chassis 414 as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: Applicant may wish to review the reference numbers throughout the specification. See paragraph 0039 and reference numbers 226 and 226’ for example.
Appropriate correction is required.
Claim Objections
Claim 12 is objected to because of the following informalities: Applicant may wish to add “operably” after “element” at line 2 of the claim for consistency.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 10-12, 15-17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shelton, IV et al. (US 9,561,038).
Shelton discloses and shows at Figs. 31-34 a steerable instrument, comprising:
a shaft (110) extending along a longitudinal axis from a proximal end portion to a distal end portion, the shaft comprising an articulable segment (see Fig. 30);
a force transmission mechanism at the proximal end portion of the shaft (see Fig. 31), the force transmission mechanism comprising one or more rotatable drive components having axes of rotation spaced from the longitudinal axis of the shaft, the one or more rotatable drive components configured to be rotatably driven by respective drive input torques;
one or more push-pull actuation (108a,108b) elements coupled to the articulable segment and configured to translate to transmit compressive forces to the articulable segment to articulate the articulable segment; and
a rotatable coupler mechanism (833) coupling one of the one or more rotatable drive components to the one or more push-pull actuation elements, the rotatable coupler mechanism configured to rotate about the longitudinal axis of the shaft in response to rotation of the one of the one or more rotatable drive components to cause translation of the one or more push-pull actuation elements.
Cl. 2 – the rotatable coupler mechanism comprises a cam surface (835)that drives the one or more push-pull actuation elements to translate the one or more push-pull actuation elements.
Cl. 3 – the rotatable coupler mechanism comprises an inclined recess on an interior wall of the rotatable coupler mechanism.
Cl. 4 – the steerable instrument further comprises a plurality of push-pull actuation elements (108a,108b); and a plurality of cam surfaces (835a, col 19:1-4) configured to drive the plurality of push-pull actuation elements, wherein the plurality of cam surfaces are configured to drive at least some of the plurality of push-pull actuation elements at differing rates from each other (one slides proximally while the other slides distally and vice versa).
Cl. 10 – Shelton discloses and shows a steerable instrument, comprising:
a shaft (110) extending along a longitudinal axis from a proximal end portion to a distal end portion, the shaft comprising an articulable segment;
a first actuation element (108a) operably coupled to the articulable segment of the shaft and extending along the shaft from the articulable segment to the proximal end portion of the shaft;
a second actuation element (108b) operably coupled to the articulable segment of the shaft and extending along the shaft from the articulable segment to the proximal end portion of the shaft; and
a rotatable coupler mechanism (833) rotatable about the longitudinal axis of the shaft and comprising cam surfaces (835a) respectively engageable with the first and second actuation elements so as to drive the first and second actuation elements in translation in response to rotation of the rotatable coupler mechanism.
Cl. 11 – the articulable segment is articulatable in response to translation of the first actuation element and the second actuation element in opposite directions to each other (col. 19:17-26).
Cl. 12 – the steerable instrument further comprises a third actuation element (152) and a fourth actuation element (151), the third actuation element and the fourth actuation element operably coupled to the articulable segment of the shaft.
Cl. 15 – the steerable instrument further comprises a rotatable drive component (831) having an axis of rotation offset from the longitudinal axis of the shaft, wherein the rotatable coupler mechanism is operably coupled to be driven in rotation in response to rotation of the rotatable drive component.
Cl. 16 – the rotatable coupler mechanism (833) comprises a rotatable sleeve (837) comprising the cam surfaces (835a) and operably coupled to the rotatable drive component.
Cl. 17 – the rotatable drive component is a first rotatable drive component (831) and the axis of rotation is a first axis of rotation, and wherein the steerable instrument further comprises a second rotatable drive component (any remaining drive component) having a second axis of rotation offset from the first axis of rotation and the longitudinal axis.
Cl. 20 – the cam surfaces comprise a first recess and a second recess (835a and col 19:1-4) engageable with respective first and second protrusions of the first and second actuation elements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 5-7, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Shelton, IV et al. (US 9,561,038), as applied to claim 1.
Shelton discloses and shows the invention of claim 1 as described elsewhere above.
Regarding claims 5-7, the rotatable coupler mechanism (833) comprises a first rotatable sleeve comprising a first plurality of cam surfaces (835a) engageable with a first pair of push-pull actuation elements (838a,838b) and configured to drive translation of the first pair push-pull actuation elements in opposite directions in response to rotation of the first rotatable sleeve, wherein the first plurality of cam surfaces (835a, col 19:1-4) comprise respective first and second inclined recesses on an interior wall of the first rotatable sleeve, wherein each of the first pair of push-pull actuation elements comprises a protrusion (838a) configured to be received within the first inclined recess.
Shelton does not specify a second rotatable sleeve arranged coaxial and between the first rotatable sleeve and the force transmission mechanism. Such would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in lieu of:
· MPEP 2144.04(VI)(B) which state, “the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced in citing In re Harza, 274F.2d 669, 124 USPQ 378 (CCPA 1960).
· MPEP 2144.04(VI)(C) details that rearrangement of parts has been established by case law to be obvious where there is no unexpected result (criticality) citing In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), In re Kuhle, 526 Fx2d 553, 188 USPQ 7 (CCPA 1975).
· MPEP 2144 clearly states that “The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rational may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law" (emphasis added).
· MPEP 2144 also states, “If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection” (emphasis added). However, Applicant’s disclosure, and all other evidence of record, fails to set forth any unexpected result (i.e., criticality) due to having 1 or more than one rotatable sleeve and any specific location over any other. Accordingly, the claimed orientation lacks any criticality such that a rejection based solely on case law is appropriate.
Regarding claims 18-19, the rotatable coupler mechanism (833) comprises a first rotatable sleeve (837) operably coupled to be driven in rotation by the first rotatable drive component and comprising a cam surface (835a) engageable with the first actuation element, wherein a first cam surface of the rotatable coupler mechanism is operably coupled to the first actuation element and is configured to be driven in rotation by the first rotatable drive component.
Shelton does not specify a second rotatable sleeve arranged coaxial and a second cam surface as claimed. Such would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in lieu of:
· MPEP 2144.04(VI)(B) which state, “the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced in citing In re Harza, 274F.2d 669, 124 USPQ 378 (CCPA 1960).
· MPEP 2144.04(VI)(C) details that rearrangement of parts has been established by case law to be obvious where there is no unexpected result (criticality) citing In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), In re Kuhle, 526 Fx2d 553, 188 USPQ 7 (CCPA 1975).
· MPEP 2144 clearly states that “The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rational may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law" (emphasis added).
· MPEP 2144 also states, “If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection” (emphasis added). However, Applicant’s disclosure, and all other evidence of record, fails to set forth any unexpected result (i.e., criticality) due to having 1 or more than one rotatable sleeve and any specific location over any other. Accordingly, the claimed orientation lacks any criticality such that a rejection based solely on case law is appropriate.
Allowable Subject Matter
Claims 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOBBY RUSHING, JR whose telephone number is (571)270-0501. The examiner can normally be reached Monday - Friday, 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at (571) 270-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOBBY RUSHING, JR/ Primary Examiner, Art Unit 3618
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